MPEP 602.01(c)(1)
Correction of Inventorship in an Application – Request Filed On or After September 16, 2012

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

Previous: §602.01(c) | Next: §602.01(c)(2)

602.01(c)(1)    Correction of Inventorship in an Application – Request Filed On or After September 16, 2012 [R-07.2015]

[Editor Note: See MPEP § 602.01(c)(3) for information about correction of inventorship for requests filed before September 16, 2012.]

37 C.F.R. 1.48  Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application.

  • (a) Nonprovisional application: Any request to correct or change the inventorship once the inventorship has been established under § 1.41 must include:
    • (1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name; and
    • (2) The processing fee set forth in § 1.17(i).
  • (b) Inventor's oath or declaration for added inventor: An oath or declaration as required by § 1.63, or a substitute statement in compliance with § 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.
  • (c) Any request to correct or change the inventorship under paragraph (a) of this section filed after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee set forth in § 1.17(d), unless the request is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.
  • (d) Provisional application. Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any request to correct or change the inventorship must include:
    • (1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies each inventor by his or her legal name; and
    • (2) The processing fee set forth in § 1.17(q).
  • (e) Additional information may be required. The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.

*****

Requests for correction of inventorship under 37 CFR 1.48 filed on or after September 16, 2012 will be handled by the Office of Patent Application Processing (OPAP).

I.    37 CFR 1.48(a) - Nonprovisional Application

Under 37 CFR 1.48(a), an applicant may submit a request for correction of inventorship in a nonprovisional patent application once the inventorship has been established. See MPEP § 602.08(b), subsection III, for details regarding naming inventorship in an application filed on or after September 16, 2012.

A request to correct the inventorship filed under 37 CFR 1.48(a) should identify the inventorship change and must be accompanied by a signed application data sheet (ADS) including the legal name, residence, and mailing address of the inventor or each actual joint inventor (see 37 CFR 1.76(b)(1) ) and the processing fee set forth in 37 CFR 1.17(i). The application data sheet submitted with a request under 37 CFR 1.48(a) must identify the information being changed with underlining for insertions and strike-through or brackets for text removed.

37 CFR 1.48(a) enables an applicant to correct inventorship where an application sets forth improper inventorship as well as where the prosecution of an application results in the need to add or delete one or more inventors (e.g., due to the addition or deletion of claims or an amendment to the claims).

II.    37 CFR 1.48(b) – Inventor’s Oath or Declaration for Added Inventor

37 CFR 1.48(b) provides that an oath or declaration as required by 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.

For applications filed on or after September 16, 2012, the oath or declaration required by 37 CFR 1.48(b) must comply with 37 CFR 1.63 in effect for applications filed on or after September 16, 2012. See MPEP § 602.01(a). A substitute statement in compliance with 37 CFR 1.64 is only available for applications filed on or after September 16, 2012. See MPEP § 604 for the requirements for substitute statements.

For applications filed before September 16, 2012, the oath or declaration required by 37 CFR 1.48(b) for an added inventor must comply with pre-AIA 37 CFR 1.63 which remains in effect for applications filed before September 16, 2012. See MPEP § 602.01(b).

III.    37 CFR 1.48(c) – Request filed after Office Action on the Merits

37 CFR 1.48(c) provides that the fee set forth in 37 CFR 1.17(d) (in addition to the processing fee) is required when requests under 37 CFR 1.48 are filed after the Office action on the merits has been given or mailed in the application. However, the fee will not be required when inventors are deleted if the request to correct or change inventorship is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.

IV.    37 CFR 1.48(d) – Provisional Application

37 CFR 1.48(d) provides for correcting inventorship in provisional applications. Under 37 CFR 1.41(c), the inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by 37 CFR 1.51(c)(1). Once a cover sheet is filed in a provisional application, any correction of inventorship must be pursuant to 37 CFR 1.48. If a cover sheet as prescribed by 37 CFR 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant 37 CFR 1.53(c), unless the applicant files a paper, including the processing fee set forth in 37 CFR 1.17(q), supplying the name or names of the inventor or joint inventors.

37 CFR 1.48(d) provides a procedure for adding or deleting or correcting or updating the name of an inventor in a provisional application. 37 CFR 1.48(d) requires that the submission include: (1) a request, signed by a party set forth in 37 CFR 1.33(b), to correct the inventorship that identifies each inventor by his or her legal name; and (2) the fee set forth in 37 CFR 1.17(q). When an inventor is being added, applicants should also file a corrected application data sheet or a new cover sheet providing the residence of all inventors. See 37 CFR 1.51(c). For provisional applications, it may not be necessary to correct the inventorship under 37 CFR 1.48(d) unless there would be no overlap of inventors upon the filing of the nonprovisional application with the correct inventorship. The need to correct the inventorship in any U.S. nonprovisional or provisional application may in part be dependent upon whether a foreign filing under the Paris Convention will occur subsequent to the U.S. filing. See MPEP § 213.